DETAILED ACTION
Notice of Pre-AIA or AIA Status
1. The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
Continued Examination Under 37 CFR 1.114
2. A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission filed on 02/28/2025 has been entered.
Priority
3. The Specification filed 02/28/2025, paragraph [0002], claims priority to prior-filed applications, as produced herein below:
[0002] This application is a continuation of U.S. Non-Provisional Application No.
15/022,353, entitled "ELECTRICAL DISCHARGE IRRIGATOR APPARATUS AND METHOD," filed March 16, 2016, which is a 371 of International Application No. PCT/US2014/019474, entitled "ELECTRICAL DISCHARGE IRRIGATOR APPARATUS AND METHOD," filed February 28, 2014, which is a continuation of International Application No. PCT/US2013/060943, entitled "ELECTRICAL DISCHARGE IRRIGATOR APPARATUS AND METHOD," filed September 20, 2013, which claims the benefit of U.S. Provisional Application No. 61/699,568, filed September 11, 2012.
4. Applicant’s claim for the benefit of a prior-filed application under 35 U.S.C. 119(e) or under 35 U.S.C. 120, 121, 365(c), or 386(c), as indicated in the Specification paragraph [0002], is acknowledged. However, Applicant has not complied with one or more conditions for receiving the benefit of an earlier filing date under 35 U.S.C.119(e) as follows:
The International Application No. PCT/US2013/060943 was filed on 09/20/2013, which was not within twelve months of the filing date of 09/11/2012 of the U.S. Provisional Application No. 61/699,568. Therefore, application PCT ‘943 is not entitled to the priority benefit of the provisional application ‘568 pursuant to 35 U.S.C. 111(b)(5) and 37 CFR 1.78(a)(1)(i). Applicant is required to correct the priority benefit claim accordingly.
In this instant application, claims 8 and 18 each recites “the electrode opposes the inner surface at a distance… the distance is equal between the electrode and the inner surface when measured from the electrode to the inner surface around the circumference of the electrode” which is found to be supported up to application PCT/US2014/019474 (filing date 02/28/2014) only, and not in application PCT/US2013/060943 (filing date 09/20/2013).
Furthermore, application PCT ‘474 (02/28/2014) contains Figs. 1-3 which were not disclosed in PCT ‘943 (09/20/2013). Therefore, application PCT ‘474 appears to be a Continuation-In-Part of application PCT ‘943. Applicant is required to correct the priority benefit claim accordingly.
The instant application claims 8 and 18 are entitled to the earliest priority benefit of filing date 02/28/2014 of PCT ‘474.
Claim Rejections - 35 USC § 112(b)
5. The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
6. Claims 1-3, 5-9, and 17-20, are rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Claim 1 recites “the aperture” (line 14) which lacks sufficient antecedent basis in the claim. Note that the claim defines antecedent basis for “at least one aperture” (line 12).
Claim 1 recites “the output tip” (line 4, line 8, line 12, line 13, line 14) and “the tip” (line 15) which is inconsistent; it is unclear whether “the output tip” and “the tip” are of the same element or different elements.
Claim 17 recites “the outside surface” (line 9, line 10), which lacks sufficient antecedent basis in the claim. Likewise, claim 20 also recites “the outside surface” which lacks sufficient antecedent basis.
Claim 17 recites “the output tip” (line 3, line 5, line 9, line 12-13) and “the tip” (line 10, twice in line 13) which is inconsistent; it is unclear whether “the output tip” and “the tip” are of the same element or different elements.
All dependent claims are rejected herein based on dependency.
Claim Rejections - 35 USC § 102
7. The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
(a)(2) the claimed invention was described in a patent issued under section 151, or in an application for patent published or deemed published under section 122(b), in which the patent or application, as the case may be, names another inventor and was effectively filed before the effective filing date of the claimed invention.
8. Claims 1-3, 5-9, and 17-20, are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Baker (US 7,678,069).
Regarding claim 1, Baker discloses an electrical discharge irrigation device 411 (Fig. 20), comprising: a power source 428; a circuit coupled to the power source (column 21 lines 10-24 “the power supply generally comprises a main or mother board containing general electrical components… and a daughter board containing application specific current-limiting circuitry…”; and an output tip 410 coupled to the circuit (Fig. 20; column 27 lines 7-17).
Referring to Figs. 20-22, , the output tip 410 is shown comprising: a first end and a second end and a longitudinal axis L4 extending between them; an electrode 464 located in an interior space of the output tip configured to receive an electrical charge from the circuit and to release an electric discharge; and a ground return 462 comprising an inside surface of the output tip, wherein a space between the electrode and the ground return comprises a conductive medium , the conductive medium being in contact with the electrode and the ground return to produce the electric discharge (Figs. 20-22, column 27 lines 6-36 “Electrically conducting fluid will continually resupplied to maintain the conduction path between return electrode 462 and electrode terminals 464”).
Regarding the newly recited limitations, Baker in Fig. 27C shows three fluid paths 583; two exterior side fluid paths 583 (on outside surface) is considered to be equivalent to the at least one aperture extending through the outside surface 518 of the output tip as claimed. The larger central fluid path 583 is considered to be equivalent to an opening at an apex of the tip. Conductive medium/fluid 550 exits the output tip through the at least one aperture 583 on the exterior surface, and through the center fluid path opening 583 at the apex. (Figs. 27-28, particularly Fig. 27C; column 30 lines 40-67; column 31 lines 1-21).
As to claim 2, Baker further discloses the electrical discharge creates cavitation within the first conductive medium (column 3 lines 61-67 “voltage may vaporize the electrically conductive fluid and generate plasma cavitation”).
As to claim 3, Baker further discloses wherein sonoluminescence occurs responsive to the cavitation, and wherein light is visible to an operator of the device during operation of the device (col. 33 lines 25-44 “when the electrode terminals are activated in the conductive material, ions in the plasma fluoresce”).
As to claim 5, Baker discloses the output tip can be utilized to create an incision 588 in tissue when at least one of the output tip or the conductive medium is positioned adjacent to the tissue 552 (Fig. 27; column 31 lines 10-13 “tissue 552 becomes ablated or transected in zone 588”).
As to claim 6, Baker discloses the output tip further comprising a pressure control mechanism of control valve 604, metering pump, or flow regulator (column 32, lines 16 29 “a control valve 604 … to allow manual control… Alternatively, a metering pump or flow regulator may be used to precisely control the flow rate of the conductive fluid”)
As to claim 7, Baker further discloses wherein the output tip is comprised of a malleable material (column 30 lines 10-13 “tubular member 578… comprises an epoxy or a silicone-based material”; such epoxy or silicone-base material are “malleable”).
As to claim 8, Baker discloses wherein the electrode opposes the inner surface at a distance, wherein the electrode is cylindrical, wherein the inner surface is cylindrical, and wherein the distance is equal between the electrode and the inner surface when measured from the electrode to the inner surface around the circumference of the electrode (Fig. 27A shows the electrodes 504 are cylindrical in shape and are spaced equidistantly between inner surfaces 512 and 518).
As to claim 9, Baker discloses wherein the output tip further comprises an insulating layer in contact with one of the electrode and the ground return (Fig. 27A: insulating layer 578, in contact with electrodes 504), wherein the insulating layer comprises at least one perforation (insulating layer 578 is perforated or broken at 502), and wherein the at least one perforation defines an area for electrical coupling between the electrode and the ground return (col. 30 line 50 – col. 31, line 10: electrical coupling occurs through conductive medium 550 within the perforation past layer 502).
Regarding claims 17-20, Baker discloses the output tip substantially as claimed as detailed above with respect to claims 1-3, 5-9. Particularly, Baker discloses the output tip 410 comprising: a first end and a second end and a longitudinal axis L4 extending between them; an electrode 464 located in an interior space of the output tip configured to receive an electrical charge from the circuit and to release an electric discharge; and a ground return 462 comprising an inside surface of the output tip, wherein a space between the electrode and the ground return comprises a conductive medium , the conductive medium being in contact with the electrode and the ground return to produce the electric discharge (Figs. 20-22, column 27 lines 6-36 “Electrically conducting fluid will continually resupplied to maintain the conduction path between return electrode 462 and electrode terminals 464”).
Regarding the newly recited limitations, Baker in Fig. 27C shows three fluid paths 583; one of the exterior side fluid paths 583 is considered to be equivalent to the at least one vent extending through the outside surface 518 of the output tip as claimed. The larger central fluid path 583 is considered to be equivalent to the at least one opening wherein the conductive medium 550 exits the output tip through the at least one opening 583 in the tip (Figs. 27-28, particularly Fig. 27C; column 30 lines 40-67; column 31 lines 1-21).
Double Patenting
9. The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The filing of a terminal disclaimer by itself is not a complete reply to a nonstatutory double patenting (NSDP) rejection. A complete reply requires that the terminal disclaimer be accompanied by a reply requesting reconsideration of the prior Office action. Even where the NSDP rejection is provisional the reply must be complete. See MPEP § 804, subsection I.B.1. For a reply to a non-final Office action, see 37 CFR 1.111(a). For a reply to final Office action, see 37 CFR 1.113(c). A request for reconsideration while not provided for in 37 CFR 1.113(c) may be filed after final for consideration. See MPEP §§ 706.07(e) and 714.13.
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The actual filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/apply/applying-online/eterminal-disclaimer.
10. Claims 1-3, 5-9, and 17-20, are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-8 of U.S. Patent No. 11,123,168 in view of Baker (7,678,069).
Although the claims at issue are not identical, they are not patentably distinct from each other because: The difference between the application claims and the patent claims lies in the fact that the patent claims include more element(s) and are thus much specific.
Regarding the limitation(s) “an outside surface of the output tip comprising at least one aperture extending through the outside surface of the output tip, wherein the conductive medium exits the output tip through the aperture and through an opening at an apex of the tip” in the application claims 1 and 17, the patent claim 1 recites the equivalent “two or more vents extending through the outside surface of the output tip”.
However, the patent claim 1 does not recite “an opening at an apex of the tip”. Nonetheless, note that Baker Fig. 27 shows the conductive medium 550 exits through apertures 583 on the exterior surface and through the central opening 583 at an apex of the tip. Such conductive medium exiting the apertures and the opening at an apex of the tip is well known as shown by Baker et al.
Furthermore, although the patent claims fail to recite some limitations, e.g. “a power source”, “a circuit…”, “a ground return comprising an inside surface”, note that Baker discloses all such limitations recited in the application claims as detailed in the above ground(s) of rejection under Baker. It would have been obvious to one having ordinary skill in the art before the effective filing date of the claimed invention to modify the patent claims to include a power source, a circuit, the ground return disposed on an inside surface of the output tip, and other elements and their arrangement as recited in the application claims, in view of Baker’s teaching of such well known suitable alternative elements and/or their arrangements within an electrical discharge irrigation device.
Response to Arguments
11. Applicant's arguments filed 02/28/2025 regarding the amendments made to the claims have been fully considered but they are not persuasive as having overcome Baker.
Regarding the newly recited limitations in claims 1 and 17, Baker in Fig. 27C shows three (3) fluid paths 583: two (2) exterior fluid paths 583 on the exterior of the tip are considered to be equivalent to the claimed “at least one aperture extending through the outside surface of the output tip”; the larger central fluid path 583 has an opening at the distal apex end which is considered to be equivalent to the claimed “an opening at an apex of the tip” (Figs. 27-28, particularly Fig. 27C; column 30 lines 40-67; column 31 lines 1-21). As such, Baker discloses the conductive medium 550 exits the output tip through the at least one exterior side aperture 583 and the large central opening 583 at the apex of the tip, as claimed.
Conclusion
12. Any inquiry concerning this communication or earlier communications from the examiner should be directed to HAO D MAI whose telephone number is (571)270-3002. The examiner can normally be reached on Mon-Fri 8:00-4:30. If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Eric Rosen can be reached on (571) 270-7855. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Hao D Mai/
Examiner, Art Unit 3772